Karnataka High Court
M/S Unibic Biscuits India Pvt Ltd vs M/S Britannia Industries Limited on 11 April, 2008
Equivalent citations: AIR 2008 (NOC) 2496 (KAR.) = 2008 (4) AIR KAR R 417, 2008 (4) AIR KANT HCR 417 2008 A I H C 3005, 2008 A I H C 3005, 2008 A I H C 3005 2008 (4) AIR KANT HCR 417, 2008 (4) AIR KANT HCR 417
Author: K.Ramanna
Bench: K.Ramanna
Puech cae SA ASD UNG ENE ZOD Sit aD ya TRA Voie SNES SENTERO ETO NUE SER IN THE HIGH COURT OF KARNATAKA AT BANGALORE DATED THIS THE 117 DAY OF APRIL, 008 BEFORE, THE HON'BLE MR. JUSTICE K RAMARNA : : M/S UNIBIC BISCUITS INDIA PVT LTD HAVING ITS OFFICE ATNO.S1/1A,_ HEGGADADEVANAPURA VILLAGE, HUSKUR ROAD,ALUR POST, BANGALORE-23.REP.BYIYS MANAGING. DIRECTOR =... APPELLANT (By ri: UDAYA HOLLA, Se. 5: COUNSEL FOR SRI AMARCHAND AND MANGALADAS, ADV. d io AND : M/S BRITANNiA INDUSTRIES LIMITED HAVING (TS EXECUTIVE OFFICE AT "- BRITANNIA GARDENS, AIRPORT ROAD, __ VIMANAPURA,BANGLAORE-17, . REP.Y ITS AUTHORIZED SIGNATORY MR. SANJAY K. HANDUR. . RESPONDENT
(By Sti: S.S.NAGANAND, Sr.COUNSEL FOR M/s.SATISH &
-. ARVIND FORC/R ) kasaaad . THIS MFA IS FILED U/ORDER 43 RULE l{r) OF CPC, AGAINST THE ORDER DATED 12.12.2007 PASSED ON IA NO.1 IN 0.8.NO.26819/07 ON THE FILE OF IV ADDITIONAL CITY CIVIL & SESSIONS JUDGE, MAYO HALL UNIT, BANGALORE, ALLOWING JA NO.1 U/ORDER 39 RULE 1 & 2 2 OF. dois bok TEMPORARY INJUNCTION, .
supaxENT The appellant-deiendemt hae come up with this appeal challenging the order dated 12-12-2007 pessed on I.A. No.1 in 0.8, 2689/2007 parsed by the IV Addl. City Clit and Scssions Judge, Meyohail Unit, Bangalore,
2. The facts of the case are that the appellant and respondent aze the companics incorporated under the Indian Companies Act snd arc the manufacturers and marketing the: bairery itema -i.e., biscuits/cookica, The plaintifr | respondent is a regintered proprictor of the trademark "6000. DAY', the plaintiff had also design registration in respect of Good Day biscuit, that in the year 1986 the
- : "plaintiff has introduced premium biscuits under the trademark-GOOD DAY and since its introduction it bas _ carved for itself a niche in the market and the public and trade circles identity as 'GOOD DAY' with preminm range of 7 biscuits, manufactured / marketed by the pleintif, and that : :
they are spending cnormous amounts for salvertiscment through print media in different languages. It is fnther case of the plaintiff-respondent that the defendant 'since 28% September 2007 onwards hes started an advertisement campaign which disparages the. products of the plaintiff, that the advertisement issued by 'the defendant prima-facie disparaging/ dcfaming goon DAY product of the plaintiff Therefore the plaintift respondent filed the suit restraining defendint-appellast, its directors, principal, proprictor, pat mers, officers employees, agents, distributors, franchises, oa representatives and assigns by way of permanent injunction _ banner GREAT DAY or in any other manner dispe mo from: . 'issuing for print or telecasting/ broadcasting the impugned advertisement copies, hand bills, etc, under the " defaming the good will and reputation of the plaintiff and its 'product sold under the trademark 'GOOD DAY' in any advertisement and in all media whatsoever inchiding print SSC TE ENE Cu CBSE and visual modia and to direct the defendant to yay Ge liquidated damages to the tune of Rs.1 (01,50,000/-_ ani costs and other relicfas. Along with the paint, the pisintit- respondent filed 1.A.No.1 . umier Onler 39 ituie 1 nti 2 of CPC which came to be allowed sud the desndant/ appellant is directed to remove the word 'GOOD DAY' from the impugned newspaper mivertisements and the word 'Forget. the good' and 'pick' from the TV Ade frame,/til-the disposel of the suit, bring aggritved the appellant-defendant bas come upewits this appeal, + it is argued by Si Udaya Holla, learned counsel appearing ior the appellant that the onder of the trial court is wholly erroneous, contrary to the facta of the case, evidence om record, perverse and capricious. It is argued that the "plaintiff bso suppressed matcrial fact and hen made fala statement before the court and obtained the interim order and that the plaintiff docs not have valid and subsisting "registration in respect of 'GOOD DAY' and that the registered trademark of the plaintiff expired on 03-04-2007 and without bringing the same to the notice of the trial court.
the plaintiff claimed that the sogistration ia sti valid end subsisting. It is brought to the mothe of the Comt tat | Section 2{1] {w] of the Trad: Marks Act 1959, _prowides thet "Registered Trade Mark means x Trade Merk which i actually on the register 2nd rerasining im force,' Therefore it is contended that the plaintiff has not approached the court with clan hands and hes suppressed scveral material facts and is not entitied to the equitable slief of injunction 4 itis further contended that the plaintiff has suppressed a similar "advertisement which they themsclvcs her been caryiag on in relation to the prouets of thei mat "jt is further case of the appellant that the "advertisements of the defendant do not in any way dleperage "the products of the plaintiff, but only 'puffs up' the product of the defendant and claims that it is the best and that there is no statement used by the defendant-appellant to show t that the product of the plaintiff is bad nor docs it in. any way 7 disparages or defames the product of the Plaintift.
6. That the advertisements of the deferdant hee been published/telecasted since May 2006 continuously and virally every other day in various. TV chennel. That the plaintiff has kept quite for mors than one and half year and has made a false sixicment in plaint that form 26% September 2007 onwards, they 'came across the advertisements. of the apyellant 'being released which are said to. "have" - disparaged the product of the plaintifi/respondest. "Phat there is delay of 1 % years in apezoaching 'this. ; court after appellant started oh edvertioements as such the plaintiff is not entitle to any . : "relief on a the ground of acquiescence and delay.
7% It is further contended that the letters 'good day' is a common English word used in India and in several other : countries, As such the plaintiff can not claim exclusive right 'or monopoly over common English letters or terms.
(3) M S NARAYANAGOUDA vs GIRIJAMIIA am 197 KAR. 58) | (4) LAKSHMINARASIMHAIAH ve. YALA GOWDA -- (AIR 1965 MYSORE 310) | (5) S P CHENGALAVARAYA NAIDU ( EAD) BY L. KS. vs JAGANNATH (DEAD ) BY L.RS (ar 1994 SC
853) a . :
(6) KIRLOSKAR © PROPRIETY ve KIRLOSKAR DIMENSIONS (AIR 1997 KAR 1) (7) M/S. POWER CONTROL. APFLIANCES vs SUMEET 'MACIZANES PVT. LTD (199% 2. 8CC 448) (8) EUREKA FORBES LTD vs PENTAIR WATER INDIA PUT LED (2007(4) KAR.L.J 122) 7 (9) RECKITT BENCKISER ve NAGA LTD (2003(26) PTC (10) - DABUR 2 bia ve WIPRO LTD (2006(36) PTC 677) _ (11) M BALASUNDARAM vs JYOTHI LABORATORIES LTD (1995(82) COMPANY CASES 830) G2) SR KAPOOR vs MICRONIX INDIA (1994 'SUPPLEMENT (3) SCC 215) a 03) MIPR 2007 (2) 316: MANU/DE/ 1642/2007 RICH PRODUCTS CORPORATION Vs. INDO NIPPON FOODS LIMITED.
(14) AIR 1953 SC 235 TROJAN & CO., LTD., Ve Rm. N.N.NAGAPPA CHETTIAR.
10. On the other hand, learned counse!. appearing for the respondent Sri S S Naganand srqued that the plnintit applied for renewal of the trade mark on 24-93-2007, by Paying prescribed fec even belure expiry of regiatrtion ic, fe on 03-04-2007 and that the registrar of the trade task sent a letter dated 26-11- 2007 inforsning that the registration of trade mark No. 4520003 in class 90 has been renewed fora period of 10 years from ©3-04-2007. it is argued that the plaintift-respondent vaoticed that since September 2007 onwards has. staried ab - edivertisement campaign which disparages the products of 'the plaintiff-respondent. It is argued that the . advertisement issued by the defendant oe prima facie disparaging/defaming GOOD DAY product of the = ; plaintiff respondent. He has produced copies of the advertisement 1 and TV Ads before this Court. It is contended that in all the advertisements of the appellant, the aim of the | » Aefendant-appeliant i is to inform the consumers not to buy ~- GOOD DAY products of the plaintiff-respondent. In the said 'advertisements the defendant-appellant indirectly sugges (sg on _ Oe ill consideration is, Whether the advertisements made by the appellants really defames or slanders the product of the | eps om iti te tt of ot Mo
12. 1 have carefully gone through the warious decisions relied on by beth the partics. The case on hand is entirely different from the ubove said decisions and the present case should be decided in its own entirety keeping in mind the principles lnk! down in the said decisions.
13. 'Nt is clear from the facta that seapondent is a manufacturer of GOOD DAY biscuits and the appellant is manufacturer of UNIBIC COOKIES ic., biscuits. Admittedly, Ot the appellant issued advertisement in various newspapers aud in the TV. The advertisement of the appellemt in . newspapers contains the words which are as follows:-
"No more good days only great day"
"why have a good day, when you can have a 2 Further, in one of the frames in TV ade the werd, 'Forget the GOOD' is used wherein a picture pushing the . GOOD' biscuit pack is shown,
14. The present cas: ia a caze of aiepungement of goods of plaintiff-respondent by using the registered trade mark of the plaintiff-repondent. Before going further, it is necessary to look inte the recent decision of the co-ondinate Bench of this Court on the point invaied in this appeal reported in 200718) KAR.LiJ. 122 in case of EUREKA FORBES Lr. -vs- PENTRAI wherein referring to the earlier judgment mace in case of RECKIT COLEMAN OF INDIA -VB- M.P.RAMACHANDRAN- '& ANR. reported in 1999 PTC (19) Ot 741, it ia obperved that :
OS ") A tradesman is entitled tm declare his goods to be best in the work, . even though the declaration is untrue.
(i) He can also say that bis goods are better than his competitors, even though such statement is untrue.
(ii) For the purpose of saying thet his goods are better than his competitors' he can even compare the advantages of his goods over the goods of others.
other words, he. eof hae his = .
and their goods, which is not
(v) If there is 20 defi atin goods or io the manufacturer of such goods no action lies, but if there is such defamation an action lics end if an action liea- for. poowery » of: damages for competent to grant an onder of injunction ' stetraining repetition of such defamation."
advertisment ia permissible, a0 log as auch comparison | decs not disparage or denigrate a trade mark or the products . . of a competitor. The comparison of different features of two "products showing the advantages, which one produce enjoy ovie the thar in sian perealn prone see comdincn oat 15. Thus though the defendant bas every right to market its product by claiming that his product is supesior in quality, yet, at the same time the freedom of expressions 14 ie., <aennen errr ge he the others. fm the instant case, from th: words ved in the advertisement, it is clear that the ssase ere iteniied to cance damage and loss to the product of the respondent. Prima facie, it appears that in all the advertisements the aim of the appellant is to inform the custorsers not io buy 'GOOD DAY"
products of the. respondent, in ita. advertisements, the defendant-appellant besides 'saying/ edivertising mat its products are supzrior but are also indirectly s ggest consumers not t buy the good day product of the respondent "There ia resemblance of Good Day product of | the: respondent with the product depicted in the
- addvertinement. In the TV Ads issued by the appellant, in one of its frome, it is mentioned "FORGET THE 'GOOD' by of pushing the pack, which is similar to the product of the os "respondent. The advertisements issued by the appellant does not stop by saying that its product are suy ior, but it _ further continues to say that the product of the plaintiff-
JL 16 such, the contention of the appellant that the word 'encn' is used as a common English worl cannot be : aon context in which the said word 'GOOD i weed ta those advertisements clearly indicate the protuct of tbe plaints respondent and it defames the sams.
17. The receipt. dated 24/9/2007 for having paid the prescribed foe for rencvml of trade mark of the respondent and the letter simt by the Registrar of Trade Merk discloses that the registration of trade mark: of the plaintiff-respandent "ni 'been resisived fot « pitied OF ten years frail 3-4-2007. Thus, prima facie, 98 on 2-4-2007 the registered trade mark of the picintiffrespondent is in Sree. As such, the os _ contention of the sppellant that the registered trade mark of
- the plaitift-spondent expired on 3-4-2007 and there is "valid ond aubsisting registered trade mark as an 3-4-2007 cannot at this stage be believed. Further, the documents : _ placed before this Court does not make it clear whether the : plaintiff-respondent had knowledge of advertisements issucd by the defendant-appellant disparaging their produce using RESETS AGC GOR OSCE ES RHE GEAR NRG EN 17 the trade mack since May 2006, ecoording to ihe
-plaintiff/respondent, they came to know 'about ihe sid advertisements only during September 2007. In the olrsence of any ckar evidence the pisintiffjzeayontent cannot be denied of interim order in their fevour, on the ground of delay and acquiescence: in approaching the Court of lew serking appropriate relict, More over, the same is a mined question of fact and lw to be established before the Court below after a fuil fledged trial. 'As auch, the contention of the defendant-appellant that 'there is a delay of 1% years in approaching the Court of law by the plaintiff/ respondent cannot be accepted at this stage
438. Further more, if the plaintiff-respondent is giving > nla advertisements defaming the pradiact of its "competitors, it doca not give cause of action to the appellant Os, to question the same unless the plaintiff-eepondent gives S "advertisement defaming the product of the deftndant- "appellant. If the plaintiff-reapondent did a wrong and he was not punished for it duc to some reasons, the same will not {9 SAE CS SNE Rae HES 18 gives a right to the appellant to do the same wrong kncwing ny wei hat wa in doing Sere' th ee io 7 the plaintiff-respondent with regerd to a differnt t euject. matter. As regards the subject matter inwelved in the present suit, prima facie it appears that the plaintitt respondent has approached the Court with clan hands. Hence, the fricl Court wna right in holding that every improper . ronduct of 'the plaints eepondent docs not disentitle it from getting equitable relic
19. The balance of convenience ies more in favour of plaintitf reapondent in granting interim injunction in its favour. Its the plaintiff respondent who will be put to great hardship, irreparable loss and injury, if the temporary "injunction is not granted. Hence, I do not find any illegality or incorzectness in the findings recorded by the Court below.
230. However the Court below has committed an error which in of seaudatory in shure. At this preliminary stage of kK ?
i9 the suit, the Court cannot grant a relict which io of | mandatory in nature. Thus, cperative parton of the impugned order is to be modified. -- - ae a .
21. Hence, the appeal is allowed in part The enter' paseed by the Court below directing the defendant/ appellant herein to remove the word "Guod Day" from the impugned nows paper advertisements and the wor! "Forget the good"
and "Pack" from the T.V. Ads fice, is hereby set aside. The appellant is tereby metcained from issuing for print or telecasting the impugeed advertisements in the same form or in any. other fom disparaging the Paetnct of the pluntif/ respondent tll the disposal of the suit, Considering the facts and circumstances of the case, "the court helow ia directed fo diapose of the suit on or before 20/08/2008. Both the parties are directed to appear before
-- the Court below on 26/05/2008 and co-operate with the . - Court below to dispose of the suit expeditiously. popes s sek gobs Cres Fygy ae! seas Ty sv Erert Seek Any observations made in this appeal sall not effet | the rights of the parties. Office is directed to send back the records forthwith.
"Safe 5 udge *sp